DETAILED ACTION
A response was received on 26 December 2025. By this response, Claims 9, 32, and 37 have been amended. No claims have been added or canceled. Claims 9, 13-15, 17, and 32-41 are currently pending in the present application.
Response to Amendment
The amendments to the specification do not clearly comply with the requirement of 37 CFR 1.121(b)(1)(ii) that the text of any deleted subject matter must be shown by being placed within double brackets if strikethrough cannot be easily perceived, noting that double brackets may also be used to show deletion of five or fewer consecutive characters. In particular, the amended paragraphs on pages 3-5 of the present response appear to include text (e.g. the single letter “a”) which may be intended to be marked with strikethrough for deletion; however, in the font used, it is difficult to discern whether such text is, in fact, marked with strikethrough for deletion. Applicant is hereby required to resubmit the amendments to the specification in a manner that more clearly complies with the requirements of 37 CFR 1.121(b) (i.e. using double brackets where necessary). See also MPEP § 714 II.B for additional recommendations for clarity in marking amendments.
Response to Arguments
Applicant's arguments filed 26 December 2025 have been fully considered but they are not persuasive.
Regarding the rejection of Claims 32-36 under 35 U.S.C. 101 as directed to non-statutory subject matter, Applicant merely states that the claims have been amended and requests withdrawal of the rejection (page 11 of the present response). However, the amendments do not appear to address the outstanding 101 rejection because the claims still do not exclude transitory signals.
Similarly, regarding the rejection of Claims 9, 13-15, 17, and 32-41 under 35 U.S.C. 112(b) as indefinite, Applicant merely states that the claims have been amended and requests withdrawal of the rejection (page 11 of the present response). However, the amendments to the independent claims do not clearly address the issues set forth in the previous rejection of those claims as detailed in the rejection below. Further, the dependent claims have not been amended, and the outstanding issues remain in the dependent claims.
Regarding the rejection of Claims 37-41 under 35 U.S.C. 102(a)(1) as anticipated by any general-purpose computer and the rejection of Claims 9, 13-15, 17, and 32-41 under 35 U.S.C. 102(a)(1) as anticipated by Brickell et al, US Patent Application Publication 2012/0137137, and with particular reference to independent Claim 9, Applicant merely requests reconsideration of the amended claims and requests withdrawal of the rejection of the claims “for at least the reasons set forth above” (pages 12-13 of the present response). Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Applicant's arguments also do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections. More specifically, although Applicant refers to “reasons set forth above”, Applicant has not actually set forth any specific reasons for how the claims are viewed to be distinguished from the cited art. Applicant has also not stated what the asserted differences are between the cited reference and the claims as amended, or provided any evidence or explanation in support of such alleged distinctions.
Therefore, for the reasons detailed above, the Examiner maintains the rejections as set forth below.
Specification
Because the amendments to the specification are not fully compliant with 37 CFR 1.121(b) as detailed above, they have not been entered. Applicant is required to resubmit the amendments to the specification in a manner fully compliant with 37 CFR 1.121(b). The objection to the specification is NOT withdrawn because the amendments have not been entered, and is repeated herein for convenience; however, it is noted that, if the amendments were resubmitted in a fully compliant manner, it appears that they would be sufficient to overcome the outstanding objections.
The disclosure is objected to because of the following informalities:
The specification includes minor grammatical and other errors. For example, on page 13, line 19 (see the original specification), the abbreviation “FPD” has not been defined. In the paragraph beginning on page 24, line 24 (see page 12 of the 04 August 2025 response), “a” should be reinserted before “firmware vulnerability database”. In the paragraphs relating to Examples 16, 19, 23, 25, 34, 36, 38, and 39 (see pages 18-20 of the 04 August 2025 response), the phrase “an out of band a scan” is grammatically unclear and not in proper idiomatic English.
Appropriate correction is required. Applicant’s cooperation is again requested in correcting any other errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 101
The rejection of Claims 32-36 under 35 U.S.C. 101 as directed to non-statutory subject matter is NOT withdrawn for the reasons detailed above and because the amendments have not addressed the issues set forth in the previous rejection.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 32-36 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 32-36 do not fall within at least one of the four categories of patent eligible subject matter because the claims are directed to computer-readable media storing instructions. The broadest reasonable interpretation of a computer readable storage device typically covers both forms of non-transitory media and transitory propagating signals per se in view of the ordinary and customary meaning of computer-readable storage media (for example, as defined by usage in issued patents and published patent applications). Further, the present specification explicitly includes signals and transitory media in its description of computer-readable media (see pages 21-23 of the present specification). Therefore, the claims encompass signals per se. A signal does not constitute statutory subject matter, because it is neither a process, a machine, an article of manufacture, nor a composition of matter, and therefore does not fall within any of the statutory classes of invention. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007), and MPEP § 2106.03(I). See also “Subject Matter Eligibility of Computer Readable Media”, 1351 Off. Gaz. Pat. Office. When a claim encompasses both statutory and non-statutory subject matter, the claim as a whole is considered to be directed to non-statutory subject matter. See MPEP § 2106(II).
Claim Rejections - 35 USC § 112
The rejection of Claims 9, 13-15, 17, and 32-41 under 35 U.S.C. 112(b) as indefinite is NOT withdrawn, because not all issues have been addressed and/or because the amendments have raised new issues, as detailed below
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9, 13-15, 17, and 32-41 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 9 recites “establishing communication… with at least one of a firmware agent or a device manager” in lines 4-5. This is grammatically unclear as to how many elements are required to establish communication. Further, it is not clear from where the communication is to be established (i.e. it is not clear what is communicating with the agent and/or manager). The above ambiguities render the claim indefinite.
Claim 13 recites “receiving the validity indicator” in lines 6-7. It is not clear whether this is intended to refer to a previously recited step; although the validity indicator was determined, it is not clear that such an indicator was received. The claim further recites “the firmware” in line 7. It is not clear whether this is intended to refer to the firmware before or after the update.
Claim 14 recites “the firmware” in lines 2, 3, and 4. It is not clear whether this is intended to refer to the firmware before or after the update.
Claim 15 recites “storing… updating… classifying… and performing” in lines 2-4. The subject of these verbs is grammatically unclear, and it is not clear whether these are intended to recite further steps of the claimed method. The claim further recites “the database” in line 2. There is insufficient antecedent basis for this limitation in the claims. The claim additionally recites “the firmware” in lines 3 and 4. It is not clear whether this is intended to refer to the firmware before or after the update.
Claim 32 recites “a computing device” in line 5. It is not clear whether this is intended to refer to the same computing device as in line 3 or a distinct device. The claim further recites “establishing communication… with at least one of a firmware agent or a device manager” in lines 6-7. This is grammatically unclear as to how many elements are required to establish communication. Further, it is not clear from where the communication is to be established (i.e. it is not clear what is communicating with the agent and/or manager). The above ambiguities render the claim indefinite.
Claim 33 recites “receiving the validity indicator” in lines 7-8. It is not clear whether this is intended to refer to a previously recited step; although the validity indicator was determined, it is not clear that such an indicator was received. The claim further recites “the firmware” in line 8. It is not clear whether this is intended to refer to the firmware before or after the update.
Claim 34 recites “the firmware” in lines 3, 4, and 5. It is not clear whether this is intended to refer to the firmware before or after the update.
Claim 35 recites “storing… updating… classifying… and performing” in lines 2-4. The subject of these verbs is grammatically unclear. The claim further recites “the database” in line 2. There is insufficient antecedent basis for this limitation in the claims. The claim additionally recites “the firmware” in lines 3 and 4. It is not clear whether this is intended to refer to the firmware before or after the update.
Claim 37 recites “a computing device” in line 4. It is not clear whether this is intended to refer to the claimed apparatus or a distinct device. The claim further recites “establishing communication… with at least one of a firmware agent or a device manager” in lines 5-6. First, the verb “establishing” is not in parallel structure as the other functions recited as “determine”, “access”, and “update”. Further, this is grammatically unclear as to how many elements are required to establish communication, and additionally, it is not clear from where the communication is to be established (i.e. it is not clear what is communicating with the agent and/or manager). The above ambiguities render the claim indefinite.
Claim 38 recites “receiving the validity indicator” in line 7. It is not clear whether this is intended to refer to a previously recited step; although the validity indicator was determined, it is not clear that such an indicator was received. The claim further recites “the firmware” in line 8. It is not clear whether this is intended to refer to the firmware before or after the update.
Claim 39 recites “the firmware” in lines 3, 4, and 5. It is not clear whether this is intended to refer to the firmware before or after the update.
Claim 40 recites “storing… updating… classifying… and performing” in lines 2-4. The subject of these verbs is grammatically unclear, and it is not clear an apparatus would include method steps. The claim further recites “the database” in line 2. There is insufficient antecedent basis for this limitation in the claims. The claim additionally recites “the firmware” in lines 3 and 4. It is not clear whether this is intended to refer to the firmware before or after the update.
Claims not specifically referred to above are rejected due to their dependence on a rejected base claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 37-41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by any general-purpose computer.
Claim 37 is directed to an apparatus, in which the only required structural elements are processor circuitry coupled to a memory. The claims only recite intended uses or capabilities of the claimed apparatus (noting the language “the processor circuitry to” which only recites a use or capability). Dependent Claims 38-41 also only recite other capabilities (e.g. “the processor circuitry is further to”) and do not provide any other structural limitations, and therefore only recite intended uses. Therefore, these claims are anticipated by any general-purpose computer (which would include processor circuitry and memory, by definition). It is noted that if the claims more specifically recited that the apparatus or processor was configured or programmed to perform the functions recited or otherwise more clearly limit the structure or function of the apparatus, then such an interpretation would no longer be appropriate and such an anticipation rejection would not be applicable.
Claims 9, 13-15, 17, and 32-41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brickell et al, US Patent Application Publication 2012/0137137.
In reference to Claim 9, Brickell discloses a method that includes determining a signature corresponding to a portion of firmware (see paragraphs 0079, 0113); establishing communication with a firmware agent or device manager (paragraph 0154, manageability engine); determining a validity indicator based on the signature (paragraph 0079, verifying firmware); accessing information identifying one or more security issues associated with the firmware (paragraphs 0078-0079, vulnerabilities discovered); and updating the firmware (paragraphs 0079-0080, updating).
In reference to Claim 13, Brickell further discloses updating the firmware to overcome the security issues (paragraphs 0078-0080); registering the updated firmware with a database (paragraph 0081); and interrupting a boot process and loading the operating system after updating the firmware (see paragraph 0077).
In reference to Claims 14, 15, and 17, Brickell further discloses performing a security scan and receiving a validity indicator, where the security issues include vulnerabilities associated with the firmware including unwanted operations, and initiating the firmware, where updated firmware is stored in a database and classified as secure (paragraphs 0078-0081).
Claims 32-36 are directed to software implementations of the methods of Claims 9, 13-15, and 17, respectively, and are rejected by a similar rationale.
Claims 37-41 are directed to apparatus having functionality corresponding substantially to the methods of Claims 9, 13-15, and 17, respectively, and are rejected by a similar rationale, mutatis mutandis.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zachary A Davis whose telephone number is (571)272-3870. The examiner can normally be reached Monday-Friday, 9:00am-5:30pm, Eastern Time.
Examiner interviews are available via telephone and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rupal D Dharia can be reached at (571) 272-3880. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Zachary A. Davis/Primary Examiner, Art Unit 2492
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